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EXHIBIT 10.02(a)
LETTER OF AFFIRMATION AND CONSENT
This AFFIRMATION AND CONSENT is made as of June 29, 2000, by and among
University of Southern California, a California nonprofit corporation ("USC"),
Rubicon Medical, Inc., a Utah corporation ("Rubicon"), and Xxxxxx
Laboratories, an Illinois corporation ("Xxxxxx").
WHEREAS, USC and Rubicon (by way of assignment pursuant to an Assignment,
Assumption and Consent Agreement dated as of June 8, 2000) are parties to that
certain Option and License Agreement, dated as of March 12, 1998, as amended
as of March 31, 1999 (collectively, the "License Agreement");
WHEREAS, Rubicon desires to grant a sublicense under the License
Agreement to Xxxxxx (the "Sublicense") pursuant to that certain Exclusive
License and Development dated as of the date hereof (the "Exclusive License"),
and USC desires to consent to such Sublicense, subject to the terms and
conditions contained herein; and
WHEREAS, in connection with the Sublicense, Xxxxxx has requested that USC
make certain affirmations with respect to the License Agreement and Patents
(which includes any and all patents and patent application as defined in the
License Agreement), and USC has agreed to make such affirmations.
NOW, THEREFORE, in consideration of the mutual covenants, agreements and
warranties contained herein, the parties hereby agree as follows:
1. Consent to Sublicense. Pursuant to Section 11 of the License
Agreement, USC hereby consents to the Sublicense and, under the terms of the
Exclusive License, Xxxxxx agrees to be bound by the terms of the License
Agreement as a Sublicensee. Pursuant to Section 24(g) of the License
Agreement, Xxxxxx hereby agrees to (a) indemnify USC to the same extent and
degree as Rubicon has agreed to indemnify USC under the License Agreement and
(b) provide insurance identical in coverage and amount to that required of
Rubicon in subparagraphs 24 (a), (b) and (c) of the License Agreement, naming
both Rubicon and USC as additional insureds.
2. Affirmations. In connection with the Sublicense, USC makes the
following affirmations, representations and covenants to Xxxxxx and Xxxxxx
hereby relies upon such affirmations, representations and covenants:
A. To the actual knowledge of USC, the Licensee under the License
Agreement is not currently in default of any provisions of the license
Agreement.
B. The License Agreement is currently in full force and effect and (i)
USC has not received from Rubicon in any country a grant back of any rights
under the License Agreement, and (ii) USC has not granted in any country to
any third party any rights licensed to Rubicon pursuant to the License
Agreement.
C. Other than the rights specifically reserved pursuant to Sections
4(c), 6 and 13 of the License Agreement and the rights of USC inventors
provided for i the USC Faculty Handbook, receipt of a copy of which Xxxxxx
hereby acknowledges, USC has not granted to any party other than the Licensee
under the License Agreement any rights with respect to the Patents.
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D. USC represents and warrants that it owns all right and title in and
to the Patents identified in appendix A of the License Agreement, including,
without limitation, PCT Patent Application Serial No. PCT/US97/23257 filed
December 16, 1997 and all related patents or patent application therefrom, and
USC agrees that it will provide any reasonable assistance deemed necessary to
clarify and ensure ownership of the Patents set forth in Appendix A of the
License Agreement.
E. USC has no actual knowledge of (i) any infringement or improper use
by any third party of the patents or (ii) any fact that may jeopardize the
validity, enforcement or ownership of the Patents. To the actual knowledge of
USC, USC has not taken or omitted to take any action which action or omission
to act would have the effect of waiving or abandoning any rights to the
Patents.
For the purposes of this Paragraph 2, the knowledge of USC shall mean the
actual conscious awareness of any of the attorneys in the USC office or
Technology licensing, Xxxxxx X. Xxxxxxxxxx, M.D. or Xxxxxx X. Xxxxxxxxx.
3. Defined Terms. All capitalized terms used herein but not
otherwise defined herein shall have the meanings ascribed to such terms in the
License Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Affirmation and
Consent to be executed as of the day and year first written above.
UNIVERSITY OF SOUTHERN CALIFORNIA
/s/
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By: Xxxxxx X. Xxxxxxxxx
Its: Senior Vice President for Administration
RUBICON MEDICAL, INC.
/s/
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By: Xxxxxxx X. Xxxxxx
Its: President/CEO
Xxxxxx Laboratories
/s/
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By: X.X. Xxxxxxx
Its: Vice President/Controller Hospital Products
